Question: What must a petition for an unintentionally delayed claim be filed with? Answer: A petition for an unintentionally delayed claim must be accompanied by: (A) the reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) a […]

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Question: How can petitions to withdraw an application from issue under 37 CFR 1.313(c) be sent to the USPTO? Answer: Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be: (A) mailed to “Mail Stop Petition, Commissioner for Patents”; (B) transmitted by facsimile; (C) hand-carried to the Office of Petitions; or (D) […]

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Question: What should a petition for retroactive license include? Answer: A petition for retroactive license shall include: (1) A listing of each of the foreign countries in which the unlicensed patent application material was filed, (2) The dates on which the material was filed in each country, (3) A verified statement (oath or declaration) containing: […]

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Question: Can a petition under 37 CFR 1.138(c) stop publication of an application? Answer: A petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication. The petition will be granted when it is recognized in […]

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Question: Does the petition to make special apply to patent applications for inventions dealing with energy resources? Answer: The U.S. Patent and Trademark Office will, on petition, accord “special” status to all patent applications for inventions which materially contribute to: (A) the discovery or development of energy resources, or (B) the more efficient utilization and […]

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Question: How can a provisional obviousness rejection be overcome? Answer: A provisional obviousness rejection can be overcome by: Arguing patentability over the earlier filed application; Combining the subject matter of the copending applications into a single application claiming benefit under 35 U.S.C. 120 of the prior applications and abandoning the copending applications Filing an affidavit […]

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Question: What does the final rule in the “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” state? Answer: In this final rule, the Office revises the rules to provide that a patent claim, or a claim proposed in a motion to amend, shall be […]

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Question: Have parties to AIA proceedings under Phillips required expanded page limits or otherwise incurred more expenses in their AIA trials than parties in AIA proceedings under BRI? Answer: PTAB has not found that parties to these AIA proceedings under Phillips require expanded page limits or otherwise incur more expense in their AIA trials than […]

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Question: Name one instance when issuance of a NIRC action would be proper in an inter partes reexamination proceeding. Answer: The following are the only instances when issuance of a NIRC action would be proper in an inter partes reexamination proceeding: There is no timely response by the patent owner to an Office action requiring […]

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Question: What should the Applicant Initiated Interview Request form identify? Answer: The Applicant Initiated Interview Request form should identify: the participants of the interview the proposed date of the interview whether the interview will be personal, telephonic, or video conference and should include a brief description of the issues to be discussed. Chapter Details: The […]

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